WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petróleo Brasileiro S.A. - Petrobras v. John Baloh
Case No. D2013-2072
1. The Parties
The Complainant is Petróleo Brasileiro S.A. - Petrobras of Rio de Janeiro, Brazil, represented by Siqueira Castro Advogados, Brazil.
The Respondent is John Baloh of Wichita Falls, Texas, United States of America.
2. The Domain Names and Registrar
The disputed domain names <buypetrobras.com> and <mypetrobras.com> (“the Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2013. On December 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 3, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2013.
The Center appointed Dawn Osborne as the sole panelist in this matter on January 8, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a Brazilian energy company with trade mark registrations for PETROBRAS for oil and gas related services around the world including in the United States. First use in commerce in the United States is recorded as 1987.
The Domain Names were registered on July 28, 2013 by the Respondent who is based in the United States and have been used to connect to pages containing links including the Complainant’s trade mark PETROBRAS and also to third party web sites with no connection with the Complainant.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant is a Brazilian energy company with trade mark registrations for PETROBRAS around the world including in the United States. It is also the owner of several domain names containing its PETROBRAS mark including <petrobras.com> and <petrobras.us>. The PETROBRAS trade mark is very familiar to consumers in Brazil and based on its extensive use of the mark the Complainant has developed a goodwill and brand recognition of its mark. The Domain Names bear the Complainant’s PETROBRAS trade mark preceded by the word “buy” in one case and “my” in the other and so are identical and confusingly similar to the Complainant’s trade mark.
The Domain Names were registered on July 28, 2013 long after the Complainant accrued its rights in its PETROBRAS mark. The Respondent does not run any business under the name “Petrobras”, has never used such expression to identify its goods and services, is not commonly known by it and does not appear to have any trade mark application or registration for the word “Petrobras”. The Complainant has never authorised the Respondent to use its trade mark PETROBRAS. The Respondent is not using the Domain Names to offer goods and services with bona fide, but is using them for pages containing links to other third party web sites which is not a legitimate noncommercial or fair use. The Respondent has no rights or legitimate interests in the Domain Names.
By using the Domain Names and having on its web pages sponsored links that incorporate the Complainant’s trade mark PETROBRAS, the Respondent’s conduct is a free ride on the Complainant’s goodwill and trade mark. The Complainant sent a warning letter to the Respondent, but did not receive a response. By using the Domain Names the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site or other online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site or location of a product or service on its web site or location.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
A. Identical or confusing similarity
The Complainant has trade mark registrations consisting of the PETROBRAS word mark around the world including the United States where the Respondent is based with first use in commerce in the United States recorded as 1987. The Domain Names are confusingly similar to the Complainant’s trade mark consisting of the Complainant’s PETROBRAS registered trade mark and the generic text “buy” or “my”. The distinctive part of the Domain Names is the “Petrobras” name. The addition of the nondistinctive text “buy” or “my” does nothing to prevent the confusing similarity of the Domain Names with the Complainant’s PETROBRAS trade mark. The “.com” suffix is ignored for the purposes of the test under the Policy. As such the Panel holds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests of the Respondent
The Respondent has not filed a Response. It has no consent from the Complainant and it has not used the Domain Names for a bona fide offering of goods and services given their confusing use, as discussed below, and it is not commonly known by the Domain Names. Nor is it making noncommercial fair use of them. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The Respondent has not provided any explanation why it would be entitled to register domain names equivalent to the Complainant’s trade mark with only generic text as additions. The websites at the Domain Names have been used for advertisement links to third party websites not connected to the Complainant. In the absence of a Response from the Respondent, considering the fame of the Complainant, the Panel is satisfied that the Complainant has shown that the Respondent both registered the Domain Names in bad faith and is using the Domain Names to attract Internet traffic to its site for commercial gain by creating a likelihood of confusion that its website is connected to the Complainant. As such the Panel finds that the Domain Names have been registered and are being used in bad faith.
For the foregoing reasons, the Panel orders that the Domain Names <buypetrobras.com> and <mypetrobras.com> be transferred to the Complainant.
Date: January 13, 2013